Beware of deceptive marks!
According to Article L 711-3 of the French Intellectual Property Code (CPI), trademarks that are "likely to mislead the public, in particular as to the nature, quality or geographical origin of the product or service" are deceptive and cannot be registered. Indeed, the aim is both to protect the consumer and to maintain fair commercial relations.
The deceptive mark, which causes confusion in the mind of the consumer, thus undermines the identifying function of the mark. Moreover, while use saves descriptive marks, this is not the case here. A misleading trademark can be cancelled years after its registration. There are, moreover, a number of trademarks that have become deceptive.
Disappointing marks from the outset
In general, the INPI will carry out an initial check during the examination of the application. If the trademark contains a "sensitive" sign (for example, "Doctor", "Health") or a indication of origin or of non attested quality ("Bio", "France"), the Office will issue a provisional refusal of registration.
Such refusal may be overcome if the misleading nature of the mark is not established. Indeed, the semi-figurative trademark BIOVICO, which is aimed in particular at food products, could finally be registered following a change in its wording. Indeed, the products covered by the mark were indeed organically produced. The mark was therefore not disappointing.
Conversely, the refusal will become final if no evidence is presented by the applicantor if the trademark has an intrinsic deceptive character. This is the case of the EUROPOLICE trademark, which, according to the INPI, "suggests a link with a European Union police force" by using the colours and shapes of the flag of the European Union. The INPI's refusal has become final, because "this sign is likely to mislead the public about [the origin of the services] by implying that it is an official badge and therefore of police services emanating from the European Union. »
The INPI thus carries out an initial check, which may lead to a refusal to register the trademark. If you receive a provisional refusal, it is important to respond to the INPI. Do not hesitate to ask for help in this process..
Examples of trademarks that have become deceptive after filing
Some brands become deceptive over time. Article L. 714-6 b ICC thus provides for the forfeiture of trademarks that have become deceptive. This is most often a defense in an infringement action. But there are also actions brought by competitors.
Trademarks can become inherently misleading. This is the case when the sign of which they are composed has changed its meaning. For example, the word "organic" is now used to indicate the biological and natural origin of the products concerned. This was not the case before the spread of organic farming. Thus, following a European directive regulating the use of the term "organic", Danone's famous "Organic" active bifidus yoghurts have had to adopt a new name..
Similarly, the recognition of a new AOC may have an impact on previously registered trademarks. In 2006, the Court of Cassation ruled that the brand "Aoste Excellence" usurped the Italian geographical indication.
Disappointment can also occur after a change in the company. For example, the brand "Mövenpick of Switzerland" became disappointing after relocating its factories to Germany. There was no longer any production in Switzerland.
Therefore, in order not to take the risk of having your trademark rejected by the INPI or annulled by a court, have a specialised representative accompany you.